A Guide to UK Copyright Law
3rd April 2023
Starting from 1 January 2024, it will be obligatory for owners of UK Trade Marks and Designs to have a UK address for service for new contentious registry proceedings involving comparable Trade Marks and re-registered Designs.
Comparable Trade Marks / Re-registered Designs Recap
Trade Mark owners will recall that because of BREXIT, the United Kingdom Intellectual Property Office (UKIPO) cloned existing EU Trade Marks and Designs into new “comparable” UK Trade Marks rights and re-registered Designs that have legal effect in the UK. This happened in January 2021 and has permitted EU representatives to act as address for service and receive correspondence from the UKIPO up until 31 December 2023.
From 1 January 2024, if a Trade Mark owner wants to update the address for service associated with a comparable Trade Mark or re-registered Design (excluding rights derived from international registrations), the UKIPO will require a UK address for service.
Furthermore, from 1 January 2024, owners of comparable UK Trade Marks or re-registered Designs must appoint a UK address for service for any new contentious registry proceedings that involve these comparable rights (this includes cancellation, opposition and rectification proceedings). Therefore, while it has been permissible for the UKIPO to forward documents relating to contentious proceedings to a non-UK address for service, this will not be the case after 1 January 2024. After this date, documents will be only be sent to a UK address for service.
What happens if a Trade Mark or Design owner does not appoint a UK address for service?
This may result in documents being delayed and not received in time to meet an important registry deadline in contentious proceedings. This could ultimately lead to a loss of rights.
What action should Trade Mark or Design Owners take now?
Although the new UK address for service requirement does not take effect until 1 January 2024, FRKelly recommends Trade Mark and Design owners be proactive and appoint a UK representative now. There is no point waiting until contentious proceedings begin. There will be a rush by owners to appoint a UK address for service as the 1 January 2024 deadline looms closer. This may put strain on the UKIPO system and resources, thereby leading to delays in recordal of the UK representative.
It would be best to take action now to avoid a forfeiture of rights. FRKelly has a dedicated UK office with experienced practitioners representing clients directly before the UKIPO. We would be delighted to record our firm as your UK address for service and manage your UK related IP matters.